[Guest Post] Defensive trade marks in Australia - Gillette achieves acceptance for unused goods and services based on reputation

[Jocelyn Bosse]

[Guest Post] Defensive trade marks in Australia - Gillette achieves acceptance for unused goods and services based on reputation

Jocelyn Bosse Thursday, November 27, 2025 - Australia, Bill Ladas, defensive trade marks, trade marks

The IPKat has received and is pleased to host the following guest contribution from Bill Ladas (King & Wood Mallesons). He discusses the breadth of goods or services that may be covered by a defensive trade mark registration in Australia, in light of the recent decision of the Australian Trade Mark Office in The Gillette Company LLC [2025] ATMO 236.

Here's what Bill has to say:

Australian law has a nifty tool that can be used by brand owners to increase the scope of enforcement rights and mitigate non-use removal risks, among other things. They go by the name of defensive trade marks and (like certification and collective marks) they’re a separate species to standard "vanilla" trade marks.

In the most recent decision handed down relating to registering a defensive trade mark, The Gillette Company LLC has achieved acceptance of the mark GILLETTE for a range of goods and services going well beyond those that it has ever used (or intends to use or authorise the use of) the mark on. On the other hand, defensive protection has been rejected for some of the applied-for goods and services.

The case highlights the availability of this option in Australia and the value it can add to a registered trade mark portfolio in terms of sword and shield benefits. It also provides some guidance on factors considered when deciding whether to grant defensive protection. We expect that the decision will further promote filings for defensive trade marks.

Gillette tested the waters and was able to keep their defensive trade mark registered for a broad range
of goods and services, but the Office found that preparations for Kats were too remote.
Photo by Helena Jankovičová Kováčová via Pexels

Defensive trade marks – what are they?

Trade marks are "use it or lose it" rights, generally. They also often come with intention to use requirements which feed into various issues, such as the content of the specification.

There are various strategies that brand owners use to mitigate non-use risks, including by identifying vulnerabilities as they arise and re-filing periodically. But re-filings can be seen as evergreening, which in turn gives rise to potential bad faith and lack of intention to use [Merpel: see IPKat here to compare the recent E&W Court of Appeal decision about this topic] validity concerns (under Australian law these provide separate albeit overlapping grounds). Brand owners also lose the benefit of an earlier priority date by re-filing.

Under Australian law, defensive filings provide an avenue to broaden enforcement rights whilst mitigating non-use and lack of intention to use risks. Defensive registrations can cover goods and services going beyond those that the registered owner provides or intends to provide (that is, there is no intention to use requirement), and they cannot be removed for non-use. A main ground on which to cancel a registered defensive mark is to remove the standard registration on which it is based in its entirety. That should be a big challenge, as the base standard registration will have been chosen on the basis that it could withstand such a challenge.

The requirements in order to register a defensive trade mark are:

1. The applicant has an existing standard trade mark registration for the same mark (so it is important to have your ducks in a row in terms of your base portfolio).
2. The registered trade mark must have been used to such an extent, in relation to all or any of the goods or services in respect of which it is registered, that its use on the goods or services claimed by the defensive registration would be likely to be taken by consumers as indicating a connection between those goods or services and the registered owner.  

The main difference with pursuing a standard trade mark registration is that evidence will need to be submitted during examination to meet requirement (2). As outlined below, this amounts to demonstrating a reputation in the Australian market at the priority date of the defensive filing, but also brings in other matters such as the inherent distinctiveness of the mark at issue.

It is important to note that – just as there are no intention to use or ongoing use requirements in respect of the goods and services in the defensive registration – it is not necessary to demonstrate use of the mark in respect of any or all of the goods covered by the defensive trade mark application.

Some stats!

At the timing of writing, there were:

• 364 registered defensive trade marks, with the earliest being 154323 for SHELL (filed by Shell Brands International AG on 10 June 1959 and cover candles, tapers, nightlights and wicks in class 4). Other registered examples include CHANEL, VICKS, COKE, MONOPOLY and – to throw in some Aussie examples – VEGEMITE and ESKY.
• 135 pending defensive trade marks.

This indicates that defensive filings are more popular today than they have been historically. And yet, to our minds at least, they are not nearly as heavily pursued as they should be…

The GILLETTE decision

The GILLETTE defensive mark was initially filed in classes 5, 7, 9, 10, 11, 14, 16, 18, 21, 24, 25, 28, 34, 35 and 44. During the course of 6 examination reports, the examiner raised and maintained an objection under section 187 of the Trade Marks Act. The examiner ostensibly required Gillette to demonstrate via evidence that a consumer encountering the GILLETTE brand in the context of the applied-for goods and services would be taken to indicate a connection between those goods and services and The Gillette Company LLC.

In pursuing acceptance Gillette relied on a principal declaration made by a Senior Vice-President and General Counsel of the applicant, and it bolstered that evidence with a supporting declaration from its attorney.

The Hearing Officer accepted that the GILLETTE mark has been in use in Australia since the 1920s, including for razors, blades, refills, shaving gels, foams and creams, and electric grooming devices, with extensive supporting advertising. The Hearing Officer also referred to evidence of use of GILLETTE in a promotional sense for additional goods. Examples included use of Gillette Stadium on a mini-football (2003), a clothing bag (2004) and clothing (2013). The Hearing Officer considered that these were used to promote the GILLETTE brand but were not products actually offered to customers. Notwithstanding, and unsurprisingly, it was accepted that the GILLETTE mark has "an extensive reputation" in Australia for shaving products and other related personal care products. It was considered that there was no use of or reputation in GILLETTE for any other goods or services.

Turning next to the cases and the history of the matter during prosecution, the Hearing Officer noted that "the extent to which the registered trade mark has been used is critical to establishing the likelihood of a connection between the goods or services in respect of which defensive registration is sought and the registered owner of the trade mark." Even if the words "famous" and "reputation" are not mentioned in the relevant statutory provisions, the Hearing Officer referred to the statement of Stewart J at first instance in Allergan v Self Care [2020] FCA 1530 that:

"[T]he mark must have some reputation in relation to all or some of the goods and services in respect of which it is non-defensively registered. That is because without that reputation the (unauthorised) use of the mark in relation to other goods or services would not be likely to suggest a connection with the owner of the registered mark."

The Hearing Officer also referred to earlier guidance in AT&T Corporation [2001] ATMO 96 as to satisfying the required connection:

• where the use of the trade mark in connection with the goods or services might be authorised use, or
• where the registered owner might be sponsoring those goods or services, or
• where the registered owner might be endorsing the goods or services, or
• where the registered owner might have entered into a strategic alliance with another company, body or entity in order to produce the goods or to offer the services in question.

The Applicant argued that the examiner had effectively placed a gloss on the words of the statute by requiring some evidence of a “natural connection or obvious nexus” between the defensive goods and services and the Applicant. Rather, all that was necessary was demonstrating the necessary connection (without referencing the actual manner of use by the applicant). It was important in this case that GILLETTE is famous in Australia, inherently distinctive and there were no conflicting marks on the register.

The Hearing Officer agreed that the nature of the trade mark provided strong support, flagging that it "is harder to obtain defensive registration of a commonplace sign or non-invented word." The lack of earlier filings for a conflict mark also helped ("if other traders are not using the Trade Mark, it is more likely that consumers will apprehend the Trade Mark being used in respect of the Goods & Services as indicating a connection with the Applicant").

Turning next to the evidence of use and advertising, this demonstrated extensive use for razors and razor blades (being the goods the subject of the standard registration on which the defensive is based). But the Hearing Officer did not accept "the proposition that consumers will connect the Applicant with any new and different goods or services in relation to which they see the Trade Mark, as this would result in an interpretation of s 185 where fame of the mark is sufficient to obtain registration for any goods and services":

"Rather, as set out in Part 6.2.4 of the Australian Trade Marks Office Manual of Practice and Procedure, the items claimed in the Goods & Services are relevant insofar as a connection is more readily established if the items 'are in some way related to those in respect of which the trade mark has already been registered and used'. This would prevent the registration of the Trade Mark for any of the Goods & Services that are so remote from the Registered Goods that use on those goods or services will not be taken to indicate that there was a connection with the Applicant."

Considering the matters in the round, the Hearing Officer took the view that the GILLETTE mark could be accepted as a defensive in respect of the following goods and services:

Class 5: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes

Class 7: Machines, machine tools, power-operated tools; motors and engines, other than for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines

Class 9: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; fire-extinguishing apparatus

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; sexual activity apparatus, devices and articles

Class 11: Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes

Class 14: Horological and chronometric instruments

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs (printed); stationery and office requisites, except furniture

Class 18: Leather and imitations of leather; luggage and carrying bags; umbrellas and parasols; saddlery

Class 21: Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes; brush-making materials; articles for cleaning purposes

Class 24: Textiles and substitutes for textiles

Class 25: Clothing, footwear, headwear

Class 28: Games, toys and playthings; video game apparatus; gymnastic and sporting articles

Class 34: Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers' articles; matches

Class 35: Advertising; business management, organization and administration; office functions

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.

 

For the acceptable goods, the Hearing Officer found that "in general the use of the Trade Mark on consumer goods (for humans) is likely to indicate a connection between those goods and the Registered Goods, noting the significant reputation the Applicant has in a common consumer product."

But the Hearing Officer required Gilette to shave off the other goods and services: 

(a) use of the mark for business management services, such as advertising or management services provided to third parties, was considered well outside the scope of consumer products for which the public is likely to infer a connection, 

(b) "there is a subset of Goods that are so specialised and/or has such a different market that it is unlikely that consumers of those Goods will apprehend the Trade Mark being used in respect of those Goods as indicating a connection with the Applicant” ("the mere fact that razors are manufactured by machines and are the product of scientific research does not provide a sufficient basis for me to reach the conclusion that the sophisticated consumers for the Goods in classes 7 and 9 would apprehend the Trade Mark being used in respect of those complex products as indicating a connection with the Applicant"), and 

(c) "goods and services that have a primarily business to business application (such as packaging materials or advertising services) are equally outside the scope of consumer goods for which the use of the Trade Mark is likely to indicate a connection in the mind of consumers of those goods."

Some strategic thoughts

• Brand protection should be considered from sword and shield angles.
• Often the greatest value of a trade mark portfolio is through the deterrent effect that owning a trade mark registration has on those searching the register, not to mention automatic blocking effects (trade mark applications in Australia are examined on relative grounds).
• Having your baseline “standard” trade mark protection in place is the first line of defence.
• On top of that, defensive marks can play a vital role in terms of providing a broader scope of protection in terms of registered goods and services coverage, without consequent non-use risks.
• The GILLETTE decision provides a positive recent example and a useful guide on the relevant considerations and should lead to further defensive filings by brand owners.

In short, all brand owners with a reputation in Australia should be considering defensive trade mark protection.

 

DO YOU WANT TO REUSE THE IPKAT CONTENT? PLEASE REFER TO OUR 'POLICIES' SECTION. IF YOU HAVE ANY QUERIES OR REQUESTS FOR PERMISSION, PLEASE GET IN TOUCH WITH THE IPKAT TEAM.

 

https://ipkitten.blogspot.com/2025/11/guest-post-defensive-trade-marks-in.html